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Now Available: CIPA Guide to the Patent Acts 7th Edition (2011)

A special thanks to Daniel Parrish for the following post: The Chartered Institute of Patent Attorneys (CIPA) is the professional body for patent attorneys in the UK, representing virtually all of the 1800+ registered practitioners (also known as patent agents).  CIPA’s most renowned text may be the CIPA Guide to the Patent Acts, colloquially known as the CIPA Guide.  The 7th edition of the CIPA Guide is now available, updated for 2011 to reflect amendments to the Patents Act 1977, Patents Rules 2007, and the Copyright, Patents and Designs Act 1988, as well as recent decisions of the UK IP Office, UK courts and the EPO Appeal Boards.   (Sweet & Maxwell, December 2011, £250, €363, $487AUS, $416USD) In 1978, the Patents Act 1977 came into force, changing the UK patent system from one based solely on common law to one based on statute, including substantial harmonization with the European Patent Convention (EPC) and Patent Cooperation Treaty (PCT).  Shortly thereafter, CIPA published the first edition of the CIPA Guide, providing a valuable resource to patent practitioners and trainees.  The CIPA Guide is now a principal component of patent coursework for trainee patent agents in the UK.  US practitioners navigating the UK patent system should, like their counterparts in the UK, find that the Guide is a useful roadmap.  The Guide has a unique layout, wherein each section of the 1977 Act is sequentially reprinted, interspersed with relevant content.  Most sections reprint the pertinent Patents Rules and provide detailed commentaries on the law in practice as well as the application of relevant decisions.  This adherence to statutory structure aids the reader, keeping him or her aware of how the case law and explanations fit into the bigger picture. Important updates in the 7th edition (2011), as stated in the Sweet and Maxwell catalogue, are listed below:

  • Contains an extensively rewritten discussion of patentable subject matter (s. 1) evaluating the impact of the landmark decision of the EPO Enlarged Appeal in G3/08 PRESIDENT’S REFERENCE and numerous subsequent decisions of the UK IP Office, UK courts and the EPO Appeal Boards
  • Updates its discussion of novelty (s.2) explaining landmark Court of Appeal decisions in Gemstar v TV Guide, Leo Pharma v Sandoz and Dr Reddy’s v Eli Lilly (selection inventions) and numerous EPO Appeal Board decisions
  • Contains a re-written review of inventive step (s. 3), explaining decisions of the House of Lords in Connor v Angiotech and Generics v Lundbeck and landmark Court of Appeal decisions including Schlumberger v Elecgtromagnetic Geosciences, Napp v Ratiopharm, Virgin Atlantic v Premium Aircraft Interiors and Generics v Daiichi; also explaining how the EPO’s PSA approach differs as between mere alternatives and advantageous alternatives
  • Contains a revised discussion on industrial applicability (s. 4) following the House of Lords decision in Eli Lilly v Human Genome Sciences
  • Updates its explanation of methods of treatment and diagnosis including the key decisions of the EPO Enlarged Appeal Board in G2/08 ABBOTT RESPIRATORY/Dosage Regime and G1/07 MEDI_PHYSICS/Treatment by surgery (s. 4A)
  • Revises the treatment of biotechnological inventions (76A) updated to include, for example, MedImmune v Novartis
  • Updates the discussion of Supplementary Protection Certificates (s. 125B), provides the latest version of Regulation (EC) 469/2009 and discusses the latest UK and European decisions on SPCs
  • Reviews the latest decisions on insufficiency including CoreValve v Edwards Lifesciences, Ratiopharm v Alza, HTC Corp v Yozmot, Schlumberger v Electromagnetic Geosciences and Novartis v Johnson & Johnson and numerous decisions of the EPO Appeal Board (s. 14)
  • Explains the latest opinions on infringement (s. 60) including Virgin Atlantic v Delta (kit of parts), Medimmune v Novartis (direct product of patented process), Rambaxy v AstraZeneca (use claims), Grime v Scott (contributory infringement) and Schutz v Werit (license to repair)
  • Updates extent of protection (125) to include key decisions in Ancon v ACS Stainless Steel fixings, Dyson v Samsung, Medimmune v Novartis and Virgin Atlantic v Premium Aircraft Interiors
  • Outlines key decisions on groundless threats (s.70) under the amended section, including Zeno Corp v BSM-Bionic and FNM Corp v Drammock
  • Explains the new Patents Court procedures set out in CPR Part 63 and the new Practice Direction together with the new procedure in the Patents County Court (s. 61 and Appendix F).
  • Reviews new procedures for dispute handling in the UK IP Office (s. 123)

The Right Hon. Professor Sir Robin Jacob, author of the foreword, says “I shall continue to keep the book within easy reach. So should anyone else concerned with European or British patents.”  US patent practitioners needing to know more about the UK and EPO practice may be wise to heed his advice. CIPA routinely contributes to or publishes a variety of reference material, including textbooks and manuals.  These can be found here.

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